TRADEMARK APPLICATION NO. 78435362 - TICK, TICK...BOOM! — ll1.l3(US)
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`Page 1 of4
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`T0:
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`Skeeziks, LLC (r_lpnfz)pOwleygibson.co_rn_)
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`Subject:
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`TRADEMARK APPLICATION NO. 78435362 - TICK, TICK...BOOM! -
`ll 1. l3(US)
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`Sent:
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`2/13/2008 4:13: 17 PM
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`Sent As:
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`ECOM1 08@USPTO.GOV
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`Attachments:
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`SERIAL NO:
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`78/435362
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`MARK: TICK, TlCK...BOOM! ~
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`CORRESPONDENT ADDRESS:
`
`Robert L. Powley
`Powley & Gibson, P.C.
`304 Hudsfm SW66‘: 2nd F1001’
`New York NY 10013
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`GENERAL TRADEMARK INFORMATION:
`http://www.us[g0.gov/main/trademarkshtm
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`APPLICANT:
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`Skeeziks, LLC
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`CORRESPONDENT ‘S REFERENCE/DOCKET
`NO :
`
`1 1 1.13(US)
`CORRESPONDENT E—MAIL ADDRESS:
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`rlp@powleygibson.cOm
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`REQUEST FOR RECONSIDERATION DENIED IN PART AND GRANTED IN PART
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`ISSUEIIVIAILING DATE: 2/l3f2008
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`Applicant is requesting reconsideration of a final refusal issued/mailed July 24, 2007.
`
`After careful consideration of the law and facts of the case, the examining attorney must deny the request
`for reconsideration in part and adhere to the final action with respect to the Title of a Single Work refusal
`for the applicant’s goods classified in International Class 009, the following specified goods classified in
`International Class 016, namely “printed publications, namely songbooks; lyric and music printed in
`sheet or book form” and for the applicant’s services classified in International Class 041. No new facts or
`reasons have been presented that are significant and compelling with regard to the point at issue. Please
`see further discussion below on the continued Title of a Single Work refusal.
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`Next, the applicant’s request for reconsideration is granted in part. Afier further consideration, the
`Omamentation refusal issued for International Classes 021 and 025 is hereby withdrawn. Additionally,
`as stated above the Title of a Single Work refusal is now limited to Class 009, 041 and particular goods
`classified in International Class 016. Therefore, the applicant’s specified International Class 016 goods,
`namely “posters, greeting cards and post cards” are not subject to Title of a Single Work refusal because
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`file://\\ticrs—ais-O1\ticrsexport\HtmlToTifiInput\RECO0O12008_03_03_10_20_l3_TTAB08...
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`TRADEMARK APPLICATION NO. 78435362 - TICK, TICK...BOOM! - ll1.l3(US)
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`Page 2 of4
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`these goods are not creative works.
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`Accordingly, applicant’s request for reconsideration is denied in part. The time for appeal runs from the
`date the final action was issued/mailed. 37 C.F.R. Section 2.64(b); TMEP Section 715.03(c). If applicant
`has already filed a timely notice of appeal, the application will be forwarded to the Trademark Trial and
`Appeal Board (TTAB).
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`Title of a Single Work Refusal
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`The stated refusal refers to Classes 009 and 041 and to the following Class 016 goods: “printed
`publications, namely songbooks;
`lyric and music printed in sheet or book form and does not bar
`registration in the other classes or of the specified Class 016 goods, namely “posters; greeting cards;
`and post cards. ”
`
`The refusal under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§105l-1052 and 1127,
`CONTINUED.
`
`is
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`In response to the examining attorney’s final refusal, the applicant requests reconsideration of the refusal
`by reiterating the argument that the proposed mark is not a title of a single work because the mark is
`being used in connection with a series of creative works and therefore capable of functioning as a
`trademark. The examining attorney notes that the applicant did not submit any new evidence in support
`of this argument. Rather, the applicant maintains that the two copyrights granted in connection with the
`applicant’s play under the name Tick, Tick...Boom! demonstrate the mark is used in conjunction with a
`series of plays. The applicant also argues that performances of the play in numerous venues and
`locations under the proposed mark have resulted in source identification as a service emanating from the
`applicant.
`
`The trademark examining attorney has carefully reviewed the request for reconsideration and is not
`persuaded by applicant’s arguments. No new issue has been raised and no new compelling evidence has
`been presented with regard to the points at issue in the final action. TMEP §7l5.03(a).
`
`Thus, the examining attorney hereby CONTINUES the Title of a Single Work refusal under Sections 1, 2
`and 45 with respect
`to the aforementioned classes and goods, continuing the arguments and
`supplementing the evidence presented by the examining attorney in the December 19, 2006 Office action
`and the Final Office action. The applicant’s mark TICK, TICK...BOOM! is the title of a single Work,
`namely it is the title of applicant’s theatrical performance. As previously stated, the applicant has not
`demonstrated use of the proposed mark to identify a series of creative works under trademark law.
`Rather, the applicant submitted copyright registrations issued in connection with the applicant’s play.
`Although the new orchestration, musical composition and script revisions may be sufiicient to obtain a
`separate copyright for the applicant’s theatrical work as a derivative work, these edits and additions do
`not evidence a series of creative works under trademark law. Rather, the copyrights show that the
`applicant’s play has been revised over time. Difierent versions of the same work do not establish a series
`of creative works. TMEP §l202.08(c).
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`Next, changes in venue and length of a performance do not evidence a series of creative works. See In re
`Canada, Serial No. 76/394362, 2004 TTAB Lexis 282, at *7-8 (TTAB May 5, 2004) (unpublished
`opinion). Although the applicant’s play is performed in a number of venues and locations throughout the
`country, TICK, TICK. . BOOM!
`is used in connection with these performances as the name of
`applicant’s play. The title of a single live theater production does not function as a service mark.
`Therefore, considering the evidence and the applicant’s arguments, the applicant’s request for
`reconsideration is denied in part and the Title of a Single Work refiisal is continued with respect to
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`TRADEMARK APPLICATTON NO. 78435362 - TICK, TICK...BOOM! — 11l.l3(US)
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`Page 3 of 4
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`Classes 009, 041 and the specified Class 016 goods, namely “printed publications, namely songbooks;
`lyric and music printed in sheet or book form.” 37 C.F.R. §2.64(b); TMEP §715.04.
`The application file will be returned to the Trademark Trial and Appeal Board for resumption of the
`appeal.
`Information Regal-din_g_Request to Divide Application
`
`The examining attorney notes the applicant’s option to file a request to divide out the goods that have not
`been refused registration because the above continued fnal refusal applies only to certain goods and to
`certain classes of goods and services within the applicant’s statement of use.
`
`Applicant has the option of dividing its application into two or more separate applications in accordance
`with 37 C.F.R. §2.87. See TMEP §§l 110 et seq. regarding requests to divide. A request to divide can be
`used to divide out certain classes or specific goods or services that have been refused registration, for
`example, and allow the rest of the application to proceed toward registration.
`
`Division of an application requires a fee of $100.00 for each new application created. 37 C.F.R. §2.6(a)
`(19).
`In addition, when dividing out some, but not all, of the goods or services within a class, the
`application filing fee of $375 must be submitted for each new separate application created by the
`division. 37 C.F.R. §2.6; TMEP §11l0.02. Anyoutstanding time period for action by the applicant at
`the time of division will apply to each new separate application created by the division. 37 C.F.R. §2.87
`(b); TMEP §1110.05.
`
`A request to divide an application may be filed at any time after filing the application and before the date
`the trademark examining attorney approves the mark for publication; or, during an opposition, upon
`motion granted by the Trademark Trial and Appeal Board.
`In addition, a request to divide an application
`under Trademark Act Section 1(b) may be filed with a statement of use under 37 C.F.R. §2.88 or at any
`time between the filing of a statement of use and the date the trademark examining attorney approves the
`mark for registration. 37 C.F.R. §2.87(c)', TMEP §l 110.01.
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`If applicant wishes to divide the application, applicant should submit a request on paper in a separate
`document from any other amendment or response. A request to divide cannot be filed electronically.
`The title “Request to Divide Application” should appear at the top of the first page of this request. 37
`C.F.R. §2.87(d). Applicant must specify the classes or goods or services that are to be divided out of the
`application, and submit all the fees.
`
`/Natalie Polzer/
`Natalie Polzer
`
`Trademark Attorney
`Law Ofiice 108
`
`Phone: (571) 272-4103
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`STATUS CHECK: Check the status of the application at least once every six months from the initial
`filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system
`at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the
`complete TARR screen. Ifthe status of your application has not changed for more than six months,
`please contact the assigned examining attorney.
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`TRADEMARK APPLICATION NO. 78435362 - TICK, TICK...BOOM! - l11.13(US)
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`TRADEMARK APPLICATION NO. 78435362 — TICK, TICK...BOOM! — 111.13(US)
`
`Page 1 ofl
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`
`
`To:
`
`Skeeziks, LLC (r|p@powleygibson.com)
`
`Subject:
`
`TRADEMARK APPLICATION NO. 78435362 - TICK, TICK...BOOM! —
`11 1.13(US)
`
`Sent:
`
`2/13/2008 4: 13:19 PM
`
`Sent As:
`
`ECOMl08@USPTO.GOV
`
`Attachments:
`
`
`IMPORTANT NOTICE
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`USPTO OFFICE ACTION HAS ISSUED ON 2/13/2008 FOR
`
`APPLICATION SERIAL N 0. 78435362
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`Please follow the instructions below to continue the prosecution of your application:
`
`VIEW OFFICE ACTION: Click on this link http:Iltmportal.uspto.govlexternallportalltow?
`DDA=Y&serial_n umber=78435362&doc_type=REC&mail_date=20080213 (or copy and paste
`this
`URL
`into
`the
`address
`field
`of
`your
`browser),
`or
`visit
`http:/ltmportal.uspto.govlexternallportalltow and enter the application serial number to access
`the Office action.
`-
`
`PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24
`hours of this notification.
`
`RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if
`a response is required; (2) how to respond; and (3) the applicable response time period. Your
`response deadline will be calculated from 2/13/2008.
`
`Do NOT hit “Reply” to this e—mail notification, or otherwise attempt to e-mail your response, as
`the USPTO does NOT accept e-mailed responses.
`Instead, the USPTO recommends that you
`respond online using the Trademark Electronic Application System response form at
`http:lIwww.uspto.govIteasleTEASpageD.htm.
`
`HELP: For technical assistance in accessing the Office action, please e-mail
`TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office
`action.
`
`WARNING
`1. The USPTO will NOT send a separate e-mail with the Office action attached.
`
`2. Failure to file any required response by the applicable deadline will result in the
`ABANDONMENT ofyour application.
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`file://\\ticrs-ais-01\ticrsexport\HtmlToTiffInput\RECO0022008_03_O3_10_20_21_TTAB08...
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`3/3/2008